Connecting with WIPO

The Hague System: A useful tool for corporations and individual designers alike

May 2005

Sony’s electric power-assisted cycle design. Although Japan is not yet a member, Sony’s European arm, Sony Overseas S.A., holds the third largest portfolio of industrial designs registered under the Hague system.

By 2004 year end nearly 35,000 international design registrations were in force under the WIPO-administered Hague System for industrial designs. But unlike the Patent Cooperation Treaty (PCT) and the Madrid System for international trademark applications, the Hague System did not break records last year. Rather, while four more countries joined the System, the total number of new registrations filed decreased. What does this mean? We take a look at what lies behind the statistics, and at the building blocks being put in place to create a spring-board for the Hague System.

Broadening the spread

The WIPO-administered, global IP registration systems all operate on the same basic principle, i.e. offering users a cost effective, streamlined procedure for protecting their IP simultaneously in any – or all – of the respective Member States. It follows that the greater the number of Member States, and the wider the geographical scope of a system, the more attractive that system becomes to users and potential users. The Hague System – with 42 Contracting States, predominantly within Europe – is the smallest of these three systems and has the most limited reach.

But membership is rising as WIPO works with partners to expand the geographical scope. The latest countries to join the Hague System include Croatia, Egypt, Hungary, Turkey, Niger and Latvia. Meanwhile, accession discussions are underway with South Africa, Portugal, Norway and the European Community.

The Geneva Act of the Hague Agreement, which came into operation in April 2004, also marked a significant step forward (see box). As well as increasing user-friendliness, the Geneva Act introduced improvements specifically designed to increase membership of the Hague System by making it more compatible with major, national registration systems. Not least, it enables the accession of intergovernmental organizations such as the 25-country European Community (EC) bloc and the 16-country African Intellectual Property Organization (OAPI).

One System, three Acts

The Hague Agreement or Hague System comprises three independent Acts, the London Act (1934), the Hague Act (1960) and the Geneva Act (1999). The system was introduced to enable design owners to obtain protection in several States by means of a single international application filed with the International Bureau of WIPO. The precise terms covering a State’s use of the System depends on which of these Acts the State is party. The successive Acts updated the System in response to the needs of rights holders and IP offices. The Geneva Act, operational since 2004, paves the way for wider membership and greater use of the system by offering new flexibilities such as:

Giving design owners the option to defer publication of their new design for a grace period of up to 30 months. This means more time for market research, and the option of withdrawing a design in a designated country before publication, thereby avoiding wasted expenditure.

Giving the examining offices of Contracting States the option to extend the refusal period to twelve months instead of the standard six months; as well as greater flexibility in setting fees.

Providing for the accession of intergovernmental organizations.

Impact of the European Community Design

It was no surprise that design applications in the Hague System decreased when the European Community Registered Design System came into operation in April 2003. Similar decreases were recorded in the national trademark operations of most European countries over the same period. The European Community system is a natural choice for applicants seeking uniform protection in the 25 markets it represents, although, as its system operates on a unitary basis, applicants do have to take into account that a refusal in one Member State invalidates the entire application. Because of this, the Hague route, operating on the basis of a “bundle” of national applications, is sometimes preferred by applicants even for registrations within European countries only.

"Packaging" is one of the most requested classifations in the Hague System. In 2004, packaging accounted for eight percent of design registrations. Bulgari filed for protection of the BLU perfume bottle in May 2004, requesting publication in color and submitting images of the BLU pour femme bottle taken from six different angles.

The WIPO Secretariat and the Office of the European Community share the aim of creating structures which will maximize the benefit to the greatest number of users and potential users. The on-going discussions regarding modalities for the EC to join the Hague System will contribute to this aim, and EC accession should provide a major uplift to the Hague operations.

Taking care of the users

The formalities of the Hague System can appear dauntingly complex. But here the relatively small size of the Hague to date has offered some benefits. Users often express appreciation of the personal service they have received in correspondence and telephone conversations with the WIPO examiners. Advice, including careful explanations for new users, and money-saving tips such as fitting as many designs as possible on each page so as to reduce the per-page fee, helps new and established users to get the most out of the System. At the same time, such contact acts as a channel for feedback to help improve the service.

Design is different…

While the global IP registration systems have much in common, it would be misleading to expect the Hague System to mirror closely the development of, for example, the PCT. Designs, by their very nature, tend to have a far more ephemeral life-span than patents or trademarks. While some endure to become classics, many designs, such as for fashion items and footwear, go in and out of style within months rather than years. As such they naturally occupy a smaller share of the overall industrial property market.

In this fast-moving environment, the challenge for the Hague is to meet the essential needs of design creators for rapid, low-cost registration, without compromising on the high, formal standards which the application process requires in order to provide solid protection.

What is an industrial design?

Definitions of what constitutes an industrial design vary from country to country. Common elements include aesthetic appearance, multi-dimensional nature, embodiment in an article with utility, and the exclusion of shape dictated by function. Here is a sample:

Brazil: …the ornamental shape of an object or the ornamental combination of lines and colors that can be applied to a product, to give a new and original visual result in its external configuration and can serve as a model for industrial production.

Pakistan: …features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which appeal to and are judged solely by the eye.

Switzerland: …any arrangement of lines or any three-dimensional shape, whether or not combined with colors, that serves as a model for the industrial production of an article.